Ex Parte Di Serio et al

Patent Trials and Appeals Board

Jan 24, 2019

14369371 - (D) (P.T.A.B. Jan. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/369,371 06/27/2014 Emile Di Serio
500 7590 01/28/2019
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
701 FIFTH A VE
SUITE 5400
SEATTLE, WA 98104
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
830115.403USPC 7794
EXAMINER
SWIATOCHA, GREGORYD.
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
01/28/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMILE DI SERIO and FABIEN SOUBRAS
Appeal2018-002437 1
Application 14/369,371
Technology Center 3700
Before WILLIAM V. SAINDON, ARTHUR M. PESLAK, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1-8. We have jurisdiction under§ 6(b).
We reverse.
1 We reference herein the Specification filed June 27, 2014 ("Spec."),
Appeal Brief filed August 23, 2017 ("Appeal Br."), Reply Brief filed
January 2, 2018 ("Reply Br."), as well as the Examiner's Answer mailed
November 2, 2017 ("Ans."), Advisory Action mailed April 25, 2017
("Adv. Act."), and Final Office Action mailed February 23, 2017
("Final Act.").
2 Appellant is the Applicant, Saint Jean Industries, which, according to the
Appeal Brief, is the real party in interest. Appeal Br. 1.
Appeal2018-002437
Application 14/3 69,371
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is the sole independent claim on appeal
and representative of the claimed subject matter.
1. A method of casting and forging, the method comprising:
creating, in a foundry, a preform of a first shape and size;
transferring the preform from the foundry to a tunnel oven;
preheating the preform to a temperature of 500°C;
transferring the preheated foundry preform into a die forge
with a second shape and size that is substantially smaller than the
first size and shape;
performing a die punching operation at a pressure of
between 600 and 700 MP A; and
prior to transferring the preheated foundry preform to the
forge die, powder-spraying a surface of the forge die and one or
more pins for positioning the preform.
Appeal Br. 8, Claims App.
REFERENCES
The Examiner relies on the following references in rejecting the
claims on appeal:
Burgess et al. us 3,931,020 Jan. 6, 1976 ("Burgess")
Lum et al. us 5,468,401 Nov. 21, 1995 ("Lum")
Jain US 6,330,818 B 1 Dec.18,2001
DiSerio US 2002/0170635 Al Nov. 21, 2002
Hasegawa et al. US 2010/0014940 Al Jan. 21, 2010 ("Hasegawa")
Pandey US 2010/0254850 Al Oct. 7, 2010
McLean US 7,895,873 Bl Mar. 1, 2011
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Appeal2018-002437
Application 14/3 69,371
REJECTIONS 3
The Examiner rejects the claims on appeal as follows:
claims 1--4 under 35 U.S.C. § 103(a) as unpatentable over Jain,
DiSerio, Pandey, and McLean;
claims 5, 7, and 8 under 35 U.S.C. § 103(a) as unpatentable over Jain,
DiSerio, Pandey, McLean, and Lum; and
claim 6 under 35 U.S.C. § 103(a) as unpatentable over Jain, DiSerio,
Pandey, McLean, and Burgess.
ANALYSIS
Independent claim 1 recites a "die punching operation," and the
Examiner finds Jain discloses this limitation. Final Act. 4. Notably, Jain is
silent regarding a die punching operation. Rather, Jain discloses a forging
operation whereby workpiece 10 is deformed between two forging dies 20
and 22 urged together by components 30 and 32 of a hydraulic press, which
can exert tens of thousands of tons of force on the workpiece. Jain 5:7-16.
In finding Jain discloses a "die punching operation," the Examiner
"has interpreted the phrase, 'a die punching operation' in a forge die to be
forging with a die that applies pressure to a workpiece." Ans. 7. The
Examiner similarly interprets "die punching" as "die stamping." Id. at 8.
The Examiner also interprets "punch" to be "any form of impact." Id.
3 The Examiner has withdrawn the rejection of claim 8 under 35 U.S.C.
§ 112, first paragraph. Adv. Act. 1. We note that this rejection in the Final
Office Action references claim 7, instead of claim 8. Final Act. 3.
However, Appellant amended claim 8 in response to the rejection
(Appeal Br. 2), and, in withdrawing the rejection, the Examiner indicated
that the rejection is of claim 8 (Adv. Act. 1 ). Accordingly, we understand
the withdrawn rejection regards claim 8.
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Appeal2018-002437
Application 14/3 69,371
In support of the Examiner's interpretations, the Examiner finds "the
Specification does not provide any further structure for the term 'die
punching' and refers only to 'die punching' as die stamping in a forge die
cavity (Page 1, line 18; Page 2, line 1) and die punching in a forge die cavity
(Page 4, line 7-8)." Id. at 7. The Examiner further finds "no references to
scrap, apertures, or holes are found in the Specification from which to
ascertain that die punching has meaning beyond die stamping in a forge die."
Id. at 8. The Examiner also cites to Hasegawa as evidence that the term
"punching" has been used to indicate forging a material in a forge die. Id.
In contrast, Appellant argues the Examiner's interpretation of "die
punching operation" is improper because it ignores the claim language by
reading out the word "punching." Appeal Br. 4. Appellant ostensibly
maintains that the meaning of "die punching operation" is distinct from
forging in a die. See id. Thus, the issue here is one of claim construction,
namely whether the Examiner properly construed "die punching operation"
to encompass forging a material in a die.
When construing claims,
the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art,
taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Furthermore, the
Federal Circuit has explained that "the ordinary and customary meaning of a
claim term is the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention, i.e., as of the effective
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Appeal2018-002437
Application 14/3 69,371
filing date of the patent application." Phillips v. AWH Corp., 415 F.3d 1303,
1313 (Fed. Cir. 2005) (en bane) (citations omitted).
Beginning with Appellant's Specification, the Specification provides
little guidance as to the meaning of the term "die punching operation." In
particular, the Specification refers to "die punching operation" only twice,
and neither of these instances provides an express definition or describes the
die punching operation in detail, other than explaining an operating pressure
of between 600 and 700 MPA. Spec. 1:19--20, 4:7-8. In addition to
referring to a "die punching operation," the Specification refers to a "forging
operation" (see, e.g., id. at 2:10) and a "die stamping operation" (id. at 2:1).
The Specification, however, provides minimal detail regarding these
operations, and it is unclear whether the terms "die punching operation,"
"die stamping operation," and "forging operation" are used interchangeably
or have different meanings. We do not agree with the Examiner that the
paucity of description in the Specification would lead one of ordinary skill in
the art to equate two different terms, i.e., die stamping and die punching.
Ans. 7-8.
Further, the Examiner has not persuasively explained why Hasegawa
supports the proposed construction. Ans. 8. In our view, Hasegawa is more
insightful and does not support the Examiner's proposed construction. The
paragraph the Examiner relies upon discloses a preliminary forging process
that uses a punch to form a material held in a die cavity. Hasegawa ,r 21.
More specifically, paragraph 21 describes "a preliminary forging process
comprising setting a columnar bolt material into the cylindrical cavity of the
die of a cold forging machine ... and punching said bolt head forming part
of said bolt material with a punch used for the preliminary forging."
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Application 14/3 69,371
Hasegawa, therefore, describes punching as using a punch to form material
held in a die.
Despite the scant description in Appellant's Specification, Hasegawa
provides evidence that a person of ordinary skill in the art would have
understood punching to be a forging process that uses a punch to form
material held in a die. Consequently, the Examiner's interpretation of "die
punching operation" to encompass forging a material in a die is
unreasonably broad.
In view of the foregoing, the Examiner's finding that Jain's forging
operation in a die discloses a "die punching operation" is based on an
improper claim construction, and, therefore, the Examiner has not shown
that Jain discloses a "die punching operation," as recited in independent
claim 1. Accordingly, we do not sustain the Examiner's rejection of
independent claim 1 and claims 2--4 depending therefrom. The Examiner's
rejections of claims 5-8, are based on the same unduly broad interpretation
of "die punching operation," and consequently suffer from the same
deficiency as the rejection of independent claim 1. Final Act. 6-8. We
similarly do not sustain the Examiner's rejections of claims 5-8.
DECISION
The Examiner's decision to reject claims 1-8 is reversed.
REVERSED
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